Weekly Patent Update – Aug 2021 (3 of 3)

The 40th Session of the Administrative Council held in Harare, Zimbabwe from 5th to 7th December 2016, identified the need to adopt a Protocol on voluntary registration of Copyright and Related Rights under the ARIPO framework and hence approved a roadmap for the establishment of a Voluntary Registration and Notification system at ARIPO. In pursuance of the objective, a feasibility study, policy, and legal framework were developed.

Following approval by the 17th Session of the Council of Ministers for the Legal Framework on establishing a regional voluntary copyright registration and notification system to be formulated into a Draft Protocol for adoption, a Diplomatic Conference set to be held in Kampala, Uganda in July 2020. However, the Conference was rescheduled due to the prevailing COVID-19 situation.

The highly anticipated Diplomatic Conference is now scheduled to take place on the 27th and 28th August 2021 at the Speke Resort Munyonyo in Kampala, Uganda. The Diplomatic Conference will be preceded by an Experts’ meeting that will bring together Copyright experts from the ARIPO Member States on 20th and 21st August 2021 and the Eleventh Extraordinary Session of the Administrative Council of ARIPO from 22nd to 26th August 2021.

The draft Protocol, upon its adoption, will establish a Regional Voluntary Registration of Copyright and Related Rights and create and maintain a Regional Database for Copyright and Related Rights for the ARIPO Member States. This will benefit them in different ways, such as: enhancing an effective and efficient network between the National offices in charge of Copyright and Related Rights and the Regional office, providing an effective means of presumption as to authorship and or ownership, facilitating commercialization, stimulating more creativity, expanding markets, attracting foreign direct investment and facilitating the enforcement of rights.

In conclusion, ARIPO sees the need to nurture, promote and protect Copyright and Related Rights, which is vital to the growth of Intellectual Property (IP) and has enormous cultural, economic, and social implications for the community we live in. Hence, the voluntary registration of Copyright and Related Rights reassures business communities and opens doors for rights holders. The system will enable effective coordination between Copyright Offices, Collective Management Organizations, rights holders, and users of Copyright at large.”

On August 2, 2021, the Japan Patent Office (JPO) and the intellectual property (IP) offices of the Association of Southeast Asian Nations (ASEAN) Member States held the Eleventh Japan-ASEAN Heads of IP Offices Meeting via video conference.

At this meeting, participants agreed on the FY2021 Japan-ASEAN IP Rights Action Plan. Additionally, the Economic Research Institute for ASEAN and East Asia (ERIA) presented a full report of their study on patent examination practices of AI inventions at the individual IP offices of ASEAN Member States.

JPO will continue to promote further international cooperative initiatives with overseas IP offices.

Please refer to the press release titled “Enhancement of Japan-ASEAN IP Cooperation (External link)” for information regarding the outcomes of the meeting.”

The National Service of Intellectual Property – SENAPI, a decentralized entity of the Ministry of Productive Development and Plural Economy, from January to July of this management, managed to issue 1860 registration titles, which grant title holders to the applicants for trademark registrations, as well achieved the registration of 52 patents, more than double those registered in 2020; Likewise, it registered 2,210 works in copyright and related rights, more than three times higher than in 2020; thus showing the creative and intellectual work that is generated in our country and the importance that the State gives to the work of creators and creators as the engine of productive development in Bolivia.

SENAPI actively participated in the process to obtain a common protection regime that avoids the unauthorized use of the “Country Brand” of the member countries of the Andean Community of Nations (Bolivia, Colombia, Ecuador and Peru) and to promote the positioning of the same in other continents, thus achieving Decision No. 876 of the Common Regime on Country Brand that will allow Bolivia to strengthen the international positioning of the Bolivian Brand by promoting tourism, exports and the image of the country.

SENAPI concluded the work of preparing the draft Law on Registration, Protection, Promotion and Preservation of Ancestral Knowledge and Traditional Knowledge of the Indigenous Peasant Nations and Peoples of the Plurinational State of Bolivia, seeking the protection of ancestral knowledge and practices; It has also been carrying out the dissemination of the intellectual, creative and innovative production of authors, male and female entrepreneurs, making the public delivery of trademark and patent registration titles; It also conducts seminars, workshops and talks, as a training mechanism on Intellectual Property issues.

And we will continue to advance in the work at the service of the Bolivian people, since the elaboration of regulations that will benefit the population is planned, such as the draft of the Intellectual Property Law; This is also how the patent competition will be launched; Similarly, seeking to encourage production units to register the distinctive signs of their products and contribute to economic reactivation, the reduction to zero rate is projected for the registration of Collective Trademarks; and a new Decision on Denominations of Origin is being worked on. “

Illicit trade in counterfeit and pirated goods still poses a massive problem which affects Danish jobs, may cause serious safety and health risks and threaten Danish welfare.

Shoes, clothes, electronics, toys and cosmetics. Despite a major effort, illicit trade in illegal counterfeit and pirated goods is still a massive problem. A new report from OECD and EUIPO (the European Union Intellectual Property Office) concludes that despite a decline since 2016, there has been no decrease in the illegal trade in counterfeit and pirated goods since 2013.

According to the report, trade in counterfeit and pirated goods amounts to up to 2.5 per cent of the total world trade as opposed to 3.3 per cent in 2016 and 2.5 per cent in 2013. At the same time, it is estimated that the import of counterfeit and pirated goods to the EU amounts to 5.8 per cent of the total import or 119 billion Euro per year.

‘It is still alarmingly large numbers that make an impression. There is no doubt that the trade in illegal counterfeit and pirated goods still poses a massive problem and is a direct attack on law-abiding companies, jobs and consumer safety. Combating illegal trade in counterfeit and pirated goods therefore still requires a focused and coordinated effort,’ says Barbara Suhr-Jessen, Head of Department at the Danish Patent and Trademark Office, who coordinates the cooperation in Denmark between 12 authorities combating counterfeit and pirated goods.

Danish companies are some of the most vulnerable

In the survey’s overview of customs’ detentions of illegal counterfeit and pirated goods, Denmark is at the very top of the list of OECD countries whose companies are most often targeted by counterfeiters.

The study is primarily based on data gathered before the corona pandemic. However, the report highlights that the rising e-commerce during the epidemic has led to a massive increase in the supply of counterfeit and pirated goods on different online platforms, including social media.

‘The massive trade in counterfeit and pirated goods is a global problem which must be combated with various means. In Denmark, we do a lot, but organised criminals constantly find new ways to sell fake products and cheat consumers. This has major implications for legitimate companies that invest effort and resources in building a successful business. Therefore, it is good news that it has recently been decided at EU level to include the fight against counterfeit and pirated goods in the 10 priority areas to fight serious and organised crime. This is expected to strengthen the fight against counterfeiting in the EU,’ says Barbara Suhr-Jessen.

According to the report, counterfeit and pirated goods can be traced to several different countries, but, by far, China remains the largest exporter of illegal counterfeit and pirated goods.

Previous reports from EUIPO conclude that in Denmark, trade in counterfeit and pirated goods result in an annual loss of 4.2 per cent of direct sales within 11 sectors. This corresponds to DKK 6.17 billion in lost sales for businesses and almost 4000 lost jobs in Denmark. Across the EU, trade in counterfeit and pirated goods result in 468,000 lost jobs as well as lost sales for businesses in 11 sectors amounting to up to DKK 446 billion annually.

Read the report from OECD and EUIPO.

For guidance to businesses on how to prevent fakes, please visit our information site on counterfeiting and piracy. Here, you can also read about opportunities for actions in case infringement has already taken place.”

In response to a proposal made by a member of China’s National People’s Congress (NPC) calling for the creation of a ‘unified intellectual property law’, the CNIPA said in a statement issued on 15 July that it endorses the proposal and has conducted research on establishing a fundamental IP law since 2009. Against the backdrop of the enactment of China’s Civil Code, the CNIPA thinks a centric IP law system is conducive to creating a consistent set of rules to be applied across all types of IP rights and reduces the duplication and overlapping of rules subsisting in the separate laws on individual right. Given that the administrative functions for multiple IP rights have combined after the government institutional reform in 2018, a unified IP law could be a natural next step. Read official announcement in Chinese.”

We are changing the way fees are made to the IPO. We will be moving to use GOV.UK Pay for online payments and using shorter payment references.

A more seamless payment experience

From 23 August 2021, the Intellectual Property Office (IPO) joins over 200 other UK government organisations in taking fee payments using GOV.UK Pay.

All fees paid online to the IPO using a credit or debit card will be made using the GOV.UK Pay service. GOV.UK Pay is secure and fully Payment Card Industry (PCI) compliant. It is used and trusted across government to take payments for over 500 different services.

The new screens will provide all the same options as the Barclaycard service we have used for the last 4 years. The big difference regular online customers will notice is that they no longer move away from GOV.UK branded screens when making a payment.

Deposit account holders’ payment options will not change.

A shorter payment reference

We are making an improvement to the process of paying fees for paper forms. The online process for paying these fees remains the same, with one small change. Instead of receiving a 16 character reference after you make a fee payment, you will now receive a 10 character payment reference. This is what you will enter onto the IPO form you are completing.

Customers have told us that the previous reference was very long and easily confused with a credit card number. Moving to a shorter reference removes that confusion and makes it easier to enter accurately on our forms.

Service disruption weekend of 21 to 22 August 2021

We plan to implement the above changes to our payment systems over the weekend of 21 to 22 August 2021. Customers accessing fee-bearing online services may experience disruption over these two days and we apologise for any inconvenience this causes.

Strong Customer Authentication (SCA)

New banking industry rules come into force over the next few months to reduce online fraud. Strong Customer Authentication (SCA) may mean that you are asked by your bank to verify your identity using a ‘second factor’ when making online payments. Visit the FCA website for more information.”

Changes to patents, designs and trade marks forms made in relation to changes to the GovPay payment system.

1. The comptroller has made these Directions under section 31A of the Registered Designs Act 1949, section 123(2A) of the Patents Act 1977 and section 66 of the Trade Marks Act 1994.

2. These Directions set out changes to the below designs forms, patents forms and trade marks forms whose use is required by rules.

3. These Directions come into force on 21 August 2021.

4. The following forms are set out in the Schedule to these Directions and are the forms which are required by the Registered Designs Rules 2006 (SI 2006/1975) as amended, the Patents Rules 2007(SI 2007/3291) as amended and the Trade Marks Rules 2008 (SI 2008/1797) as amended:

Patents forms

Patents form 1 (Request for grant of a patent)
Patents form 2 (Initiation of proceedings before the Comptroller)
Patents form 3 (Late Additions and Declarations of Priority)
Patents form 4 (Continuation of proceedings before the Comptroller)
Patents form 7 (Statement of inventorship and of right to grant of a patent)
Patents form 9A (Request a search and request a further or supplementary search under section 17(6) or section 17(8))
Patents form 10 (Request for a substantive examination)
Patents form 12 (Payment of renewal fee)
Patents form 14 (Request to reinstate a patent application)
Patents form 15 (Notice of opposition to proceedings before the Comptroller)
Patents form 16 (Application to restore a patent)
Patents form 17 (Request for opinion as to the validity or infringement of a patent)
Patents form 21 (Application to register or give notice of rights)
Patents form 23 (Request for a copy of a document or a register entry)
Patents form 34 (Grant fee for patent application)
Patents form 49 (Request to be informed of future events relating to a patent application or patent)
Patents form 52 (Request to extend a prescribed time limit)
Patents form NP1 (National processing of international patent (UK) application)
Patents form SP1 (Application for grant of a supplementary protection certificate)
Patents form SP2 (Payment of annual fees (and additional fee for late payment))
Patents form SP3 (Application for declaration of lapse or invalidity, or to revoke an extension of the duration of an SPC)
Patents form SP4 (Application to extend a supplementary protection certificate)
Patents form AF1 (Pay the application fee if it has not already been paid with form 1 or form 9A)

Designs forms

Designs form DF2A (Apply to register one or more designs)
Designs form DF2B (Application to register designs divided from an earlier application)
Designs form DF2C (Application to register a design which registration was deferred)
Designs form DF9A (Renewal of design registration)
Designs form DF12A (Record/cancel a change of ownership, licence or security)
Designs form DF16A (Change of proprietor’s name or address)
Designs form DF19A (Request to invalidate a design registration)
Designs form DF19C (Notice by proprietor to cancel a registration)
Designs form DF21 (Request for a search of the UK designs register)
Designs form DF23 (Request for a certified copy)
Designs form DF29 (Request to restore a registration)
Design right form DRF1 (Reference of dispute to Comptroller)
Design right form DRF2 (Application to be made a party to proceedings)
Design right form DRF3 (Apply to settle/adjust licence of right terms pre August 1989)
Design right form DRF4 (Vary licence of right terms by design right or copyright owner)

Trade mark forms

Trade marks form TM3 (Application to register a trade mark)
Trade marks form TM3A (Request to amend the appropriate class)
Trade marks form TM5 (Request for a statement of reasons)
Trade marks form TM7 (Notice of opposition)
Trade marks form TM7F (Notice of fast track opposition)
Trade marks form TM7G (Request to add grounds to a notice of opposition)
Trade marks form TM9 (Request an extension of time)
Trade marks form TM9R (Request for a retrospective extension of time)
Trade marks form TM11 (Renewal of trade mark registration, renewal additional class, renewal late payment)
Trade marks form TM12 (Request to divide an application)
Trade marks form TM13 (Request to restore and renew a registration)
Trade marks form TM16 (Application to record a change of ownership)
Trade marks form TM16P (Application to record partial assignment)
Trade marks form TM24 (Application to record or amend a security interest)
Trade marks form TM24C (Application to cancel a security interest)
Trade marks form TM26(I) (Application to declare invalidation)
Trade marks form TM26(N) (Application to revoke a trade mark for non-use)
Trade marks form TM26(O) (Application to revoke a trade mark other than non-use)
Trade marks form TM31C (Request for information about events relating to a UK trade mark)
Trade marks form TM31M (Request for event information relating to international trade mark (UK))
Trade marks form TM31R (Request for a certified copy)
Trade marks form TM35 (Regulations governing the use of certification or collective marks)
Trade marks form TM36 (Application to amend the regulations)
Trade marks form TM50 (Application to record a licensee)
Trade marks form TM51 (Application to remove or amend a licence)
Trade marks form TM55P (Notice of Appeal to the Appointed Person (inter parte))

5. Patents forms 3, 14, 16, 21, 52, trade mark forms, 9, 9R, 11, 13 and designs forms 9A, 29 as so set out, replace the corresponding Forms in the Schedule to the Directions made on 31 March 2021 (which came into force on 1 April 2021). The Directions made on 31 March 2021 are, to that extent, revoked.

6. Patents forms 1, 2, 4, 15, 17, 23, NP1, SP1, SP3, SP4, trade mark forms 3, 5, 7, 7F, 12, 16, 16P, 26(I), 26(N), 26(O), 35, 36, 50, 51, 55P and designs forms 2A, 2C as so set out, replace the corresponding forms in the Schedule to the Directions made on 21 December 2020 (which came into force on 1 January 2021). The Directions made on 21 December 2020 are, to that extent, revoked.

7. Patents forms 9A, 10, 12, trade mark forms 24, 31R and designs form 23 as so set out, replace the corresponding forms in the Schedule to the Directions made on 2 November 2020 (which came into force on 9 November 2020). The Directions made on 2 November 2020 are, to that extent, revoked.

8. Patents forms AF1, 34, 49, SP2, trade mark forms 3A, 7G, 24C, 31C, 31M, and designs forms 2B, 19A, 21, Design right form 1, Design right form 2, Design right form 3, Design right form 4 as so set out, replace the corresponding forms in the Schedule to the Directions made on 24 September 2020 (which came into force on 1 October 2020). The Directions made on 24 September 2020 are, to that extent, revoked.

9. The remaining trade marks and designs forms as so set out, replace the corresponding forms.”

This month, Chinese government authorities and courts announced new measures to implement the patent linkage system, a key feature of the new Patent Law. They specified the rules for challenging the marketing authorisation of a patented drug both at the administrative and judicial levels.

1. Measures for the Implementation of Early Resolution Mechanisms for Drug Patent Disputes (Trial)

2. Administrative Adjudication Measures for Early Resolution Mechanisms for Drug Patent Disputes

3. Provisions of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Civil Cases Concerning Patent Disputes Related to Drugs Applied for Registration

The overall mechanism remains unchanged from the proposed draft released last year, which includes a 45-day window for patent holders to challenge a new generic applicant; a 9-month moratorium in new drug approval process; and a 12-month period of market exclusivity granted to the first successful generic challenger. Generic drug applicants must now notify any patent holder within ten days of submitting their declaration to the National Medical Products Administration (NMPA). This notification requirement reduces the burden for patent holders to closely monitor the new drug applications filed at the NMPA. Read official announcement here, here and here.”

China’s local IP administrations executed the administrative adjudication of patent infringement disputes steadily in the first half of 2021, with an eye on key spots of both online and offline areas, key links and crucial periods including the May Day and the Dragon Boat Festival holidays by consolidating resources which has evidently paid dividends. A total of 13,800 patent infringement cases were admitted in different provinces, with Zhejiang, Jiangsu, Guangdong, Shanghai, Sichuan, Fujian, Hebei, Beijing, Anhui, Henan and Shandong ranking at the front in the country.

The China National Intellectual Property Administration (CNIPA) issued the 2021 China Intellectual Property Administrative Protection Work Plan this March and deployed the work of strengthening administrative adjudication of patent infringement disputes in five aspects including improving the collection and sorting mechanism of patent disputes and strengthening the crackdown on patent infringements. Local IP administrations formulated implementation plans in accordance with the requirements to effectively promote patent administrative adjudication.

The CNIPA in the first half of this year identified Anhui, Fujian and other places as the second batch of pilot demonstration areas for administrative adjudication of patent infringement disputes on the basis of the first batch of pilot areas, encouraging the above areas to take the lead and make breakthroughs in advancing the administrative adjudication system and relevant work. Jointly with the Ministry of Justice of the People’s Republic of China, the CNIPA also issued notices to publicize 13 typical experiences and practices emerging in Beijing and Hebei to further refine the administrative adjudication system and procedural rules by virtue of multiple platforms comprised of the China Intellectual Property News, the China Market Regulation News, CNIPA’s official Wechat and website, striving to foster the sound competitive atmosphere.

Local administrations, such as Beijing, Zhejiang, Shanghai, Liaoning, Jiangsu, Anhui, Hubei, have taken measures to advance the work under the guidance of the Work Plan, which would achieve remarkable results. Six central provinces including Shanxi and Hunan, and 18 cities in Shanxi, Hebei, Shandong and Henan provinces respectively signed cooperation agreements for administrative protection, establishing the cross-regional cooperation team and building the cooperation mechanism for administrative adjudication’s clue transfer, investigation and execution, joint law enforcement, mutual recognition and sharing. The CNIPA jointly with IP administrations in Hunan and Sichuan continues to advance the systematic capabilities of administrative adjudication by innovating online and offline methods to conduct special training for the backbones. Wuhan has formulated the patent administrative enforcement mechanism by issuing the Administrative Rules for Patent Administrative Rulings and Administrative Mediation Enforcement (Trial Version) to effectively advance the pilot work of constructing the demonstration area for patent administrative adjudication. IP administrations across the country strive to tighten the regulations of patent infringements, which gives full play to the administrative protection advantages and creates a sound climate for innovation and business.

In the next step, the CNIPA will further comprehensively strengthen the IPR protection and enhance the administrative adjudication in the field of IP infringement disputes in accordance with the requirements of the Central Committee of the Communist Party of China and the State Council. Centering on the development of the pilot demonstration, the CNIPA will coordinate its IP administrations to enhance the administrative adjudication of patent infringement disputes, strengthen the guidance and raise the capabilities of administrative adjudication among the whole system, which helps to serve the country’s economic and social development and provide the solid guarantee for applying the new development philosophy and creating a new development pattern to enhance high-quality development.”

-An organizational restructuring to newly create the Technology & Design Police Division-

The Korean Intellectual Property Office (KIPO) Commissioner Yong Rae Kim announced the official formation of a separate special judicial police (SJP) group at KIPO solely devoted to preventing the leakage and infringement of key technologies that are core to national industrial competitiveness.

KIPO recently carried out a restructuring with the purpose of expanding the former ‘Intellectual Property Investigation Division’ and allowing concentrated investigations according to specific areas of intellectual property. A separate ‘Technology & Design Police Division’ was newly established to carry out investigations related to primarily technologies and designs while the ‘Trademark Police Division’ will continue with trademark investigations and the ‘Unfair Competition Investigation Division’ with administrative investigations.

Previously, the Intellectual Property Investigation Division consisted of 47 personnel to investigate illegal activities related to trademarks, patents, unfair competition, etc. In the restructuring, an additional 11 officers joined to supplement investigations regarding technology. Now, there are 22 people in the Technology & Design Police Division, 29 people in the Trademark Police Division, and 7 people in the Unfair Competition Investigation Division. In total, there are 58 personnel for the criminal or administrative investigation of intellectual property.

Overall, KIPO retains about 1,200 personnel working in examination and trial, and about 500 of them have Ph.D degrees or have licenses as lawyers or patent attorneys. In order to enable swift and fair investigations, KIPO recruited those with technical and legal expertise gained through years of experience in IP examinations and trials to form the Technology & Design Police Division. This ?Tech Police? for investigations related to technology will serve as protector of core national technologies by preventing overseas leakage and infringement amid the growing technology war between countries.

KIPO first established an SJP on trademarks in 2010 for investigations focused on the infringement of trademarks. Since then, they have processed about 53,000 reported cases and investigated approximately 4,000 individual suspects with criminal charges while confiscating 12 million pieces of counterfeit products (estimated to be worth KRW 520 billion in genuine product value) in total. KIPO has also actively responded to large-scale counterfeit enforcement and helped block the distribution of counterfeits in the field closely related to the health and safety of the public. For example, the efforts have led to the crack down of counterfeit face mask packs (worth KRW 20 billion at genuine product value, 2019), counterfeit automobile wheels (worth KRW 22.5 billion at genuine product value, 2017), health foods (worth KRW 65.2 billion at genuine product value, 2015), etc. In addition, KIPO’s investigative efforts related to technology has resulted in 415 criminal cases and the investigation of 759 individual suspects for criminal charges since 2019. This accounts for 17% of the entire criminal cases involving technology per year in South Korea.

Commissioner Kim expressed that a dedicated ‘Technology Police’ will allow investigation to be focused on cases of technology leakages overseas. He added that “we will crack down on any violation of innovative technologies that Korean companies have worked hard to create in order to foster a fair market order.””

Because of the current coronavirus situation in the Helsinki area, we are closing our customer service point in Helsinki from 20 August until 30 September 2021 as a work and customer safety measure.

Our online services and telephone services will be running normally.

Our customer service number is 029 509 5030 (Mon–Fri 9.00–16.15).

You can send paper notifications by post or leave them in our mailbox on the wall of our office building at Sörnäisten rantatie 13 B, Helsinki. We recommend that you use our online filing service. It is quicker and cheaper than using paper forms.

Our online services and information services are available at the prh.fi website.

Email us for more information:

Finnish Trade Register
Advice: neuvonta.kaupparekisteri@prh.fi

Trademarks
Advice: neuvonta.tavaramerkki@prh.fi
Advice relating to trademark classification: luokitusneuvonta@prh.fi
Email your office action response, or any additional submissions, to: tmposti@prh.fi

Patents
Advice: advice.patents@prh.fi

Design rights
Advice: neuvonta.malli@prh.fi

Associations
Advice: neuvonta.yhdistysasiat@prh.fi

We are prepared to carry out our duties as an authority despite the coronavirus outbreak. We apologise for any inconvenience caused.

For more information, please contact:

PRH Customer Service
Mon–Fri 9.00–16.15
Tel. 029 509 5030”